Can Post Filing Data Overcome Inventive Step in China?
Since 2010, the Patent Re-examination Board (PRB) has published the top 10 patent invalidation cases of the year in April of each year. The selection criteria are high social concern, significant impact on the related industry, or involve difficult legal issues and important examination criteria. Below is one of the top 10 cases that discusses post filing data in China patents.
Post Filing Data in China
Can post-filing data showing unexpected technical effect be used to overcome inventive step if the specification contains no data but asserts the unexpected technical effect?
In short, the answer is no, post-filing data cannot be used to overcome inventive step even if the idea was asserted if the original data was not in the application.
Novartis’s Chinese patent (201110029600.7) claimed the combination of AT 1-antagonist valsartan and NEP inhibitor Sacubitril. The specification asserted that the combination of the two drugs had synergistic effect, yet provided no data at the time of filing.
The PRB sided with petitioner Dai Jinliang and argued that one of skill in the art could not predict that the combination would be synergistic without experimental data. In other words, applicants had not solved the technical problem of providing a pharmaceutical combination with synergistic effects. At most, applicants had provided a pharmaceutical composition for treating hypertension. In January of 2018, the PRB declared that the Novartis patent was invalid.
In our experience, if experimental data is in the application as filed but another piece of prior art is cited during prosecution, the applicant may submit post-filing data showing results of comparison studies with the newly discovered art, provided that the original data for applicant’s invention was already disclosed in the application as filed.
About the Author
Jennifer Che, J.D. is a US Patent Attorney and Vice President and Partner at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.[email protected]This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
Other Articles
What Kind of Damage Awards Can You Get in China?
16 June 2022
Is it worth filing for a patent in China? What kind of damage awards can you get? Pharma companies care more about injunction than damage awards, since it’s quite unlikely that any damage award can compensate for the large amounts of money that may be lost for patent infringement. Chinese courts often issue injunctions in […]
Read more >
China’s Newest Examination Guidelines: Inventive Step for Biological / Life Science Inventions (Part III)
30 April 2021
This is Part III of a three-part series summarizing the Examination Guidelines that were released by the CNIPA on January 15, 2021, one year to the date of Phase 1 of the US and China Economic and Trade Agreement. That agreement included specific provisions where China "shall permit pharmaceutical patent applicants to rely on supplemental […]
Read more >
No % homology? How to craft allowable claim scope around sequences to comply with China’s strict written description requirements
23 November 2018
Since 2010, the Patent Re-examination Board (PRB) has published the top 10 patent invalidation cases of the year in April of each year. The selection criteria are high social concern, significant impact on the related industry, or involve difficult legal issues and important examination criteria. Below is one of the top 10 cases that discusses […]
Read more >
How Far Can an Employer Reach to Own Employee-made “Service Inventions”?
30 July 2020
2019 China’s Top 50 Representative IP Cases Shenzhen Weibang Technology Co. Ltd v. Li Jianyi & Shenzhen Yuancheng Intelligence Equipment Co. Ltd (2019最高法民申6342号) Each year in China there are hundreds of disputes over patent ownership. A significant part of them are related to “Service Inventions”, which are defined in Article 6 of the Chinese Patent […]
Read more >
Our Past Events
Dr. Jacqueline Lui, Ms. Pauli Wong, and Mr. Eddie Ho Named Patent Stars by ManagingIP
13 June 2025
Eagle IP Ranked Among Top Tier Firms in IAM Patent 1000
12 June 2025
Jennifer Che from Eagle IP to Attend BIO 2025 in Boston!
11 June 2025
Insights from HKSTP Market Discovery - BIO Connect
28 May 2025
HKMHDIA Medical Fair Forum
27 May 2025
Celebrating Innovation at the Asia Summit for Global Health
